Case 3:21-cv-09773-JD Document 57-3 Filed 02/09/23 Page 1 of 37
`Case 3:21-cv-09773-JD Document 57-3 Filed 02/09/23 Page 1 of 37
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`EXHIBIT 3
`EXHIBIT 3
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`Case 3:21-cv-09773-JD Document 57-3 Filed 02/09/23 Page 2 of 37
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA
`SAN FRANCISCO DIVISION
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`Case No. 3:21-CV-9773-JD
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`DECLARATION OF WILLIAM HENRY
`MANGIONE-SMITH
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`TWITTER, INC.,
`Plaintiff,
`
` v.
`VOIP-PAL.COM, INC.
`
` Defendant.
`
`I, William Henry Mangione-Smith, declare as follows:
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`I. Introduction
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`1.
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`I have personal knowledge of the facts contained in this declaration and, if called as a
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`witness, I could and would competently testify to those facts. I am being compensated at my normal
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`consulting rate. My compensation does not depend on and in no way affects the substance of my
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`statements in this Declaration.
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`II. Qualifications
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`2.
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`My technical background covers most aspects of computer system design, including low
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`level circuitry, computer architecture, computer networking, graphics, application software, client-server
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`application, Web technology, and system software (e.g., operating systems and compilers). I am a member
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`of the Institute of Electrical and Electronics Engineers and the Association for Computing Machinery,
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`which are the two most significant professional organizations in the computer field. I have been employed
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`as a design engineer, research engineer, professor and technical expert. Over my professional career I
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`have been an active inventor with at least 121 issued U.S. patents, 206 published and pending U.S. patent
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`applications and many unpublished U.S. patent applications.
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`3.
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`From 1984 until 1991 I attended the University of Michigan in Ann Arbor, Michigan. I
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`was awarded the degrees of Bachelor of Science and Engineering, Master of Science and Engineering,
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`and Doctor of Philosophy. My doctoral research focused on high-performance computing systems
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`including computer architecture, applications and operating system software, and compiler technology.
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`One of my responsibilities during my graduate studies included teaching senior undergraduate students
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`who were about to enter the profession.
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`4.
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`After graduating from the University of Michigan I was employed by Motorola in
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`Schaumburg, Illinois. At Motorola, I was part of a team designing and manufacturing the first commercial
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`battery-powered product capable of communicating Internet email over a wireless (i.e., radio frequency)
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`link and one of the first personal digital assistants. I also served as lead architect on the second-generation
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`of this device. My responsibilities at Motorola included the specification, design, and testing of system
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`control Application-Specific Integrated Circuits (“ASICs”). I conducted the initial research and advanced
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`design that resulted in the Motorola M*Core embedded microprocessor. M*Core was designed to provide
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`the high performance of desktop microprocessors with the low power of contemporaneous embedded
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`processors. The M*Core received widespread use in several communications products including various
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`telephone handsets, advanced pagers, and embedded infrastructure. While at Motorola I was also the sole
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`inventor on one U.S. patent.
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`5.
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`From 1995 until 2005 I was employed by the University of California at Los Angeles
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`(“UCLA”) as a professor of Electrical Engineering. I was the director of the laboratory for Compiler and
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`Architecture Research in Embedded Systems (“CARES”) and served as the field chair for Embedded
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`Computing Systems. The CARES research team focused on research, engineering and design challenges
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`in the context of battery-powered and multi-media mobile computing devices. One of the key
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`developments of my lab was the Mediabench software tool, which is widely used to design and evaluate
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`multi-media embedded devices. Key elements of Mediabench include software that is essential for
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`modern digital telephony. My primary responsibility, in addition to classroom teaching, involved
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`directing the research and training of graduate students. I was a tenured member of the faculty and had
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`responsibilities for teaching as well as scholarly research. While at UCLA I was a named inventor on
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`three U.S. patent applications. My colleagues at UCLA were some of the leading scientists and engineers
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`in the world with a long list of innovations from computer network security devices to the nicotine patch.
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`The graduate student researchers in my laboratory came from a diverse set of backgrounds, all with
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`undergraduate degrees in computer engineering, electrical engineering or computer science. Many of
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`them had multiple years of experience working as professional engineers in areas such as software
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`development, computer system design and ASIC circuit design.
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`6.
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`From 2005 until 2009, I was employed at Intellectual Ventures in Bellevue, Washington.
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`My responsibilities at Intellectual Ventures included business development, technology assessment,
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`market forecasting, university outreach, collaborative inventing, intellectual property licensing support,
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`and intellectual property asset pricing. My colleagues and co-inventors at Intellectual Ventures included
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`the former lead intellectual property strategist at Intel, Intel’s lead IP council, Microsoft’s chief software
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`architect, the founder of Microsoft research, the designer of the Mach operating system, the architect of
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`the U.S. Defense Department’s Strategic Defense Initiative, the founder of Thinking Machines (a seminal
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`parallel-processing computer system), and Bill Gates. I was responsible for hiring and managing over 15
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`staff members including multiple Ph.Ds. with degrees in engineering or science with decades of
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`experience in product design and engineering.
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`7.
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`A brief summary of some of my qualifications for the facts and understandings stated in
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`this declaration are as follows: I have more than 27 years of experience as a computer architect, computer
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`system designer, educator, and as an executive in the PC and electronics business. I am also a member of
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`a number of professional associations, such as the ACM, IEEE and have been intimately involved in
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`professional research through the International Symposium on Microarchitecture (Program Chair for 26th
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`and General Chair for 36th), IEEE Transactions on Computers (Associate Editor), ACM Transactions on
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`Embedded Computing Systems (Associate Editor), and IEEE Computer (Associate Editor). I also have
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`been on the program committees for many computer conferences, including a Network Processors
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`Workshop. For further details regarding my employment and academic history, please refer to my
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`curriculum vitae (Ex. A).
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`III. Task
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`8.
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`I have been asked to provide testimony regarding the understanding of a person of ordinary
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`skill in the art (“POSA”) at the time of invention regarding the technology disclosed and claimed in VoIP-
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`Pal’s patents, United States Patent No. 8,630,234 (the “’234 patent”) and United States Patent No.
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`10,880,721 (the “’721 patent”) entitled “Mobile Gateway.” In forming my opinions for this Declaration,
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`I have adopted the perspective of a POSA as of the priority date, defined as follows: a POSA would be
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`someone with an undergraduate degree in either Computer Science, Computer Engineering, Electrical
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`Engineering, or a closely related discipline. I believe that such a person would likely have about 2 years
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`of experience in system-level development, but a greater degree of professional experience could serve to
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`replace some formal education and a greater degree of formal education could replace some professional
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`experience. Based on my education and experience, by the priority date of the ’234 and ’721 patents, I
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`was a person who had more than ordinary skill in the art in the relevant field of technology of the ’234
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`and ’721 patents.
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`9.
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`This is not the first time I have provided testimony for VoIP-Pal. For example, I provided
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`expert declarations and deposition testimony in inter partes reviews (IPR2016-01198 and IPR2016-
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`01201) relating to two of VoIP-Pal’s patents, namely, U.S. Patent No. 8,542,815 (“the ’815 Patent”) and
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`U.S. Patent No. 9,179,005 (“the ’005 Patent”). I have also previously submitted a declaration regarding
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`the ’606 patent. See Case No. 5:20-cv-2397-LHK, Dkt. No. 52-1; Case No. 5:20-cv-2460-LHK, Dkt. No.
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`62-1; Case No. 5:20-cv-2995-LHK, Dkt. No. 63-1. While I am not a lawyer and have no formal legal
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`training, I am a prolific inventor with many issued Patents, I have worked at the intersection of patents
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`and computer technology for at least 18 years, and I have provided expert testimony in many patent cases.
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`In making the statements contained in this declaration, I have relied on my education in computer
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`engineering, 30+ years of professional experience and have reviewed at least the documents identified
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`below.
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`∂ The patents at issue, collectively referred to as the “Mobile Gateway Patents,” namely, U.S.
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`Patent No. 8,630,234 (“the ’234 patent”) and U.S. Patent No. 10,880,721 (“the ’721
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`patent”) and certain intrinsic evidence associated with these patents (e.g., excerpts from
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`several cited references illustrating what was well-understood, routing or conventional to
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`a POSA);
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`∂ The “RBR family of patents” owned by VoIP-Pal, in respect of which I previously provided
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`testimony, collectively including: U.S. Patent No. 8,542,815 (“the ’815 Patent”), U.S.
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`Patent No. 9,179,005 (“the ’005 Patent”), U.S. Patent No. 9,537,762 (“the ’762 patent”),
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`U.S. Patent No. 9,813,330 (“the ’330 patent”), U.S. Patent No. 9,826,002 (“the ’002
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`patent”), U.S. Patent No. 9,948,549 (“the ’549 patent”), U.S. Patent No. 9,935,872 (“the
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`’872 patent”), and U.S. Patent No. 10,218,606 (“the ’606 patent”);
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`∂ Documents filed in IPR2016-01198 and IPR2016-01201 (inter partes reviews relating to
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`the parent ’815 and ’005 Patents), including patent file histories, inventor declarations,
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`prior art, telecommunications dictionaries and reference works.
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`IV. THE MOBILE GATEWAY PATENTS FROM THE PERSPECTIVE OF A POSA
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`10.
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`This declaration comprises my true and honest statement of the facts, based upon my
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`review of the Mobile Gateway Patents and their file histories, my educational background, my knowledge
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`of prior communications methods, and my experience and knowledge as a professional and person of
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`ordinary skill in the art (“POSA”) for at least the last 25 years. I am prepared to provide verbal testimony
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`and supplementary written declarations should those be of service to the Court.
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`A.
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`11.
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`Telephone Switchboard Operators.
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`I have been asked to consider whether a POSA would have considered the processes of
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`historical switchboard operators and calling cards to be like Claim 1 of the ’234 Patent In my view, a
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`person of skill in the art would have recognized that the use of calling cards and switchboard operators
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`was distinct from the process recited in the claims included Claim 1 of the ’234 Patent, as explained below.
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`12.
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`There is no information in the patent specification about switchboard operators. The well-
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`known practices of early switchboard operators, before they were replaced by automatic switches, are
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`described in the Defendant’s Counterclaim at ¶¶15-19. The Counterclaim is drafted from the point of
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`view of a telephone switchboard operator who receives an incoming request from a caller who is connected
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`to the operator’s switchboard. See Counterclaim, ¶15. In the example given, the caller lifts a handset
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`portion of the telephone “such that the operator was signaled when the portion was lifted from the hook.”
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`Id. Thus, a caller’s telephone was directly connected to a switchboard operated by a human operator Id.
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`Upon the operator answering this incoming call signal, “[the] caller would then say the name of the person
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`they wished to call to the operator.” Id. If the callee was connected to the same telephone switch board,
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`the operator would physically pull out a cable associated with the caller’s phone and plug the cable into a
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`socket associated with the callee’s telephone. If the callee was associated with a different switchboard,
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`and thus out of reach of the operator, a second operator would be involved to bridge the gap to the
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`appropriate switchboard. Thus, the Counterclaim sets up a hypothetical example in which a caller has just
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`lifted the handset off the hook to alert the switchboard operator, so the operator knows that this caller is
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`already connected to the switchboard, but doesn’t know whether the callee is connectable on the same
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`switchboard. Id. Therefore, the location of the callee determined how the call was switched or routed.
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`13.
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`In the example given, the switchboard operators satisfies a call request from the caller by
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`connecting the caller to the callee on the same switchboard or by connecting the caller to a different
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`operator’s switchboard, who will complete an end-to-end path to the callee. An initial portion of a circuit-
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`switched path was already established when the caller contacted the switchboard; the switchboard operator
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`simply completes a further downstream portion of this circuit-switched path to the callee. No additional
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`action is needed by the caller or caller’s phone for the call to go through. This process differs from Claim
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`1 of the ’234 Patent. There is no “access code” in the switchboard operator analogy. Likewise, there is
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`nothing in the operator analogy that functions as an exchange of messages resulting in the switchboard
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`operator providing an “access code” to the caller in the manner recited in Claim 1. Nor does the caller
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`receives anything from the operator, let alone an “access code”, to be used by the caller in subsequent
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`steps to establish a call. Neither the operator nor the caller determines the initial portion of the call; it is
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`determined by the physical connection of the caller’s phone to the switchboard. The operator only
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`determines the next portion of the path taken by the circuit-switched call.
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`14.
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`A POSA would recognize the fundamental differences between switchboard operator
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`practices and the Mobile Gateway Patents. As discussed, incoming calls were “switched” by switchboard
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`operators only after they arrived at the switchboard through a fixed, prewired circuit from the caller’s
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`phone to the switchboard. Switchboard operators had no ability to switch the point-of-access of the
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`caller’s telephone to the telephone network. The well-known “switching” procedures of switchboard
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`operators, i.e., “physically pull[ing] out a cable associated with the caller’s phone and plug[ging] the cable
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`into a socket associated with the callee’s telephone,” affected the downstream path of a call, but not the
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`caller’s initial connection to the switchboard. The operator could affect the “next hop” of the path, but
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`not a call’s point of access to the switchboard. In contrast, Claim 1 of the ’234 Patent provides a caller
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`with a point of access into a communication network, based on the caller’s location, by using an access
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`code.
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`15.
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`The switchboard operator analogy is inapt, in part, because it tries to analogize to a
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`historical situation in which the location of the caller was fixed. As noted above, a caller’s phone was
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`permanently installed at a particular physical location; this phone was physically connected to a particular
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`switchboard or central office (telephone exchange) by wires; and it was not possible for the caller to
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`connect to a different switchboard at will. Counterclaim at ¶¶15-20. Phones in a particular locale were
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`connected by wire to a nearby switchboard or central office / exchange due to the limitations of analog
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`signaling. While switchboard operators could switch incoming calls received at their switchboard, they
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`had no control over each telephone’s respective wireline connection to a particular switchboard. Nor
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`could operators choose the incoming paths or connections of calls arriving from distant exchanges—these,
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`too, were physically wired as inputs to their switchboard; operators only chose where to send calls once
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`they arrived. Thus, the location of a caller (their landline connection to a switchboard at a local central
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`office or exchange) and the location of the exchanges and their interconnections were all fixed. This
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`organization is fundamentally dissimilar to the situation addressed by the Mobile Gateway Patents,
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`entitled “Mobile Gateway,” which describe an invention relating to “initiating or enabling a call with a
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`mobile telephone to a callee.” ’234 Patent at 1:13-14. Claim 1 of the ’234 patent is directed to a “method
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`of roaming with a mobile telephone.” Roaming in the specification is distinguished from conventional
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`roaming in that the inventive method, apparatus and system provides a distinct alternative to conventional
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`roaming. Id. at 13:4-9. Roaming implies that a mobile telephone is allowed to move from one location
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`to another. The claim also recites a “location identifier identifying a location of the mobile telephone”
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`and an “access code” associated with the mobile phone’s location that is received from an “access server”
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`and then used to initiate a call.
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`16.
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`Significantly, a mobile phone is capable of travel and forms dynamic wireless connections;
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`it lacks a fixed, wired connection to a particular piece of communications infrastructure. A mobile phone’s
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`mobility thus means that it may connect to different communications infrastructure at different times.
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`Providing an attractive and effective infrastructure for a mobile phone to connect to is one of the
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`improvements provided by the Mobile Gateway Patents. See Counterclaim at ¶¶23-24. For example, a
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`POSA would understand from the patent specification that providing an access code that is conditioned
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`on the location of the mobile telephone, e.g., one providing the phone with a location-based point-of-
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`access to the system operator’s network, can improve the phone’s and network’s performance relative to
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`a fixed point-of-access by providing access to a communication channel with better performance or a
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`lower cost given that phone’s location (e.g., lower toll charges, lower transmission time/latency, optimized
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`load sharing, and/or better QoS, etc.). See, e.g., ’234 Patent at 12:7-54, 23:26-28, 8:33-61, 9:18-43, 13:4-
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`9. The method also may provide connectivity where the conventional wireless carriers lack coverage. In
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`contrast, early switchboard operators could not affect how incoming callers’ phones connected to the
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`telephone network (e.g., to their switchboards). Switchboard operators never provided a code for the
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`caller’s use in accessing the telephone network (i.e., an “access code”); the caller had already accessed
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`the telephone network by virtue of the fixed physical wiring. Also, the caller did not need to take a
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`subsequent step to initiate the call, using the access code (again, there was no “access code” provided to
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`the caller, and moreover, initiation had already occurred by the fact of the caller requesting the operator’s
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`assistance in the first place.) Likewise, even in cases where a switchboard operator involved another
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`operator to route the call via multiple switchboards or trunk lines, there was no “access code” provided
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`for the caller’s use in subsequent steps to initiate a call. Any interaction between operators, at best,
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`affected the downstream portion of the call, but not the the point-of-access of the caller to the phone
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`network in the first place, and did not involve anything akin to the “access code” recited in Claim 1 of the
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`’234 Patent. Operators made routing decisions (not point-of-access decisions) to connect the caller to the
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`switchboard of the callee, regardless of which switchboard the caller was originating from. The location
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`of the caller was not important for an operator switching the incoming call; rather, the operator was
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`concerned with establishing the next leg of the circuit switched path. Indeed, in cases where an incoming
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`call had passed through several switchboards, a remote (downstream) switchboard operator might not
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`know the caller’s location, however, information about the callee’s phone number was sufficient for the
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`operator to route the call towards the callee. The method recited in Claim 1 of the ‘234 Patent
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`fundamentally differs from such operator procedures. Attempts to analogize the claimed invention to
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`switchboard operator processes are thus bound to fail.
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`17. While the above considerations are sufficient to show the operator analogy fails, applying
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`the analogy to the structure of Claim 1 of the ’721 Patent is especially absurd. That claim differs from
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`Claim 1 of the ’234 Patent in that it makes explicit that at least two elements of infrastructure are contacted
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`by the mobile telephone: (1) an “access server” used to request a location-dependent “access code” to
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`setup the call; and (2) a “communication channel” on a “gateway” that is used to initiate the call using
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`said “access code.” The switchboard operator analogy simply makes no sense here. If the caller’s initial
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`point of contact (the switchboard or switchboard operator) is analogized to the “access server,” then the
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`switchboard operator must provide the caller or the caller’s phone with an “access code” that the caller
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`itself must use to initiate a call to a different switchboard or operator (i.e., gateway). Moreover, the “access
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`code” must be based on the “location identifier” representing the caller’s location. In my opinion, there
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`is no valid historical analogy for this claim’s structure available from the realm of switchboard operators.
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`Placing a call using a switchboard operator did not involve multiple stages, nor did it require the caller to
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`use multiple elements of infrastructure in sequence. Rather, a caller connected to an operator; then, the
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`operator switched the downstream path of call. Regardless of whether the operator routed the call on the
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`same switchboard or forwarded the call to another switchboard for routing, the operator-induced routing
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`affected only the downstream path of the call—never its upstream path (i.e., prior to the switchboard).
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`Nor was there any location-based optimization of the phone’s point-of-access performed by either the
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`caller or the operator. As discussed above, a landline phone had a fixed location and a fixed
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`interconnection to a nearby switchboard or telephone exchange. Neither the caller nor the switchboard
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`operator(s) could choose the phone’s point of access to the telephone network; rather, its “communication
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`channel” was fixed and there was no alternative “communication channel” available that could be chosen,
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`even in principle. Even if the first operator passed the call to a second operator at a different switchboard,
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`this did not involve choosing or controlling the caller’s upstream connection to the first switchboard (i.e.,
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`the initial point-of-access to the network). Nor was passing the call to a second operator a step that the
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`caller or the caller’s phone needed to perform. There was no “access code.” A POSA would recognize
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`these and other fundamental differences between the methods and elements recited in the claims and
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`historical switchboard operator call routing processes.
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`18. Making out a switchboard operator analogy requires one to either ignore the structure and
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`steps recited in the asserted claims or else to generate false narratives about actions that would have been
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`allegedly performed by switchboard operators. A POSA would find it inconceivable and unhistorical to
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`imagine a scenario in which a switchboard operator would “choose” or change the communication channel
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`through which a caller had accessed the telephone network. For example, it is implausible to imagine a
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`caller asking a switchboard operator to call a particular callee, but the operator refusing to connect the
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`caller—instead, requiring the caller to call in from a different landline (e.g., from their office or a friend’s
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`phone) to a achieve a different point-of-access. Even in such an absurd and unhistorical scenario, the
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`operator analogy fails. Here, the caller can only change their “communication channel” by changing
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`location (and, presumably, being forced to use a different telephone), which is not analogous to Claim 1.
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`Forcing callers to change their location or phones to obtain a supposedly “better” communication channel
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`is totally different than, and inferior to, providing a communication channel that is customized for a
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`caller’s location, as in the Mobile Gateway Patents.
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`19.
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`The limitations of the early telephone system and early solutions such as switchboards are
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`not the same as the problems and solutions addressed by the invention of the Mobile Gateway Patents.
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`Nor do conventional wireless cellular telephone systems address similar issues. As discussed above, the
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`early telephone system restricted each telephone to one, fixed location, connected by a physical wireline
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`connection to a relatively close-by switchboard. Cellular telephone systems removed the limitation on
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`calling only from a fixed, physically wired, location but still required callers to use cellular wireless
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`infrastructure operated by the carrier or its partners even though this was costly for users (e.g., in the form
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`of long-distance charges or roaming charges) or had limited capabilities and performance (e.g., voice only
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`with no video transmission, limited bandwidth, poor quality of service (“QoS”)). The Mobile Gateway
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`Patents address these and other problems. A POSA would appreciate that the Mobile Gateway Patents
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`allowed a caller’s location to change (see Claim 1 of the ’234 Patent, reciting “roaming” and transmitting
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`updates of the phone’s location through a “location identifier”). A POSA would understand from the
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`claims and specification that access to the network was provided by means of an “access code,” for
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`example, a telephone number or Internet Protocol (IP) address. Id. The POSA would recognize how the
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`“access code” was associated with a location of the mobile telephone, and in particular, how access codes
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`were used to identify a point-of-access or “channel” (cf. Claims 8, 10, 19, 26, 28, 30, 38, 46, 54, 62, 70,
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`and 78) whereby the phone could connect to infrastructure that was suited to its location, in particular, to
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`“enable[] a local call to be made.” See Claim 1 of the ’234 Patent. Thus, a method of how a mobile phone
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`can interact with cooperative communication infrastructure to obtain a point-of-access that is specifically
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`associated with the phone’s location to enable an improved (i.e., more proximate, or “local”) call
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`connection is described in Claim 1, as would be understood by a POSA in the field of the invention. Claim
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`1 is not directed to the issue of call routing per se, but rather, to how the caller initiates access to the
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`communication network (albeit the specification also describes how the call can be ultimately routed).
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`The POSA would have recognized that the claimed invention is not the same as conventional “roaming”
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`on a wireless carrier networks. “Roaming” in the conventional sense did not enable a “local call” if you
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`were calling a long-distance callee. Furthermore, conventional roaming typically required you to use
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`whatever wireless carrier infrastructure was in your area, for example, the cellular towers of another carrier
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`that had a agreements with your home carrier to allow its subscribers to “roam” using their network
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`infrastructure. A POSA would appreciate that, in some scenarios, Claim 1 would allow you to sidestep
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`the infrastructure of wireless carriers altogether, or at least the infrastructure of foreign wireless carriers
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`that had agreements with your home carrier. For example, in some embodiments, Claim 1 would allow
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`the call to be made using an Internet Protocol (IP) address, rather than a telephone number. See ’234
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`Patent at 9:34-37, 13:49-58, 18:32-37. This could be done over a WiFi connection. See ’234 Patent at
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`9:6-17, 11:52, 13:, 23, 14:26, 14:61, 10:42-58. Similarly, Claim 1 of the ’721 Patent recites initiating a
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`call with an “access code based on the location identifier,” which in turn is “a location identifier
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`identifying a geographical location of the wireless device.” See ’721 Patent, Claim 1. This location-
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`based “access code” for initiating communications serves to identify a communications channel on a
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`gateway tailored to the wireless device’s location.
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`Id. A POSA would understand from the patent
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`specification that providing an access code that is conditioned on the location of the mobile device enables
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`access to the network via more proximate (or “local”) network infrastructure to improve the cost and
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`performance metrics of the phone and network, as compared to using the systems of wireless carriers;
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`namely, the claimed method can provide access through an access code to a communication channel with
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`better performance or a lower cost given that phone’s location (e.g., decreased charges, lower transmission
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`time/latency, optimized load sharing, scaling, and/or better QoS, etc.). See, e.g., ’234 Patent at 12:7-54,
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`23:26-28, 8:33-61, 9:18-43, 13:4-9.
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`20.
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`The patent is not restricted to using a PSTN telephone network, with its connotation of
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`what constitutes a “local” call. The patent expressly states that communication channels may have a local
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`calling area associated with a PSTN telephone numbers (9:24-28), but then, in the same context, discloses
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`that the channels could be non-PSTN communication channels (9:34-37). A POSA would recognize from
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`the specific